Case 3:13-cv-00091-JAP-DEA Document 64 Filed 05/29/14 Page 1 of 5 PageID: 2867
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF NEW JERSEY
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`____________________________________
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`ASTRAZENECA AB, et al.
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` Civil Action No. 13-0091 (JAP)
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` (Consolidated for discovery purposes
` with: Civil Action Nos. 11-2317,
` 11-4275,11-6348)
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`OPINION
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`Plaintiffs,
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`v.
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`DR. REDDY’S LABORATORIES INC.
`et al.
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`Defendants.
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`PISANO, District Judge
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`In this Hatch Waxman patent infringement action, Defendants Dr. Reddy’s
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`Laboratories, Inc. and Dr. Reddy’s Laboratories Ltd. (collectively, “Defendants” or “DRL”)
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`have moved for summary judgment of noninfringment. Plaintiffs AstraZeneca AB,
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`AstraZeneca LP, KBI-E Inc., and Pozen Inc. (collectively, “Plaintiffs”), in conjunction with
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`their opposition to the motion, have moved under Federal Rule of Civil Procedure 56(d) for
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`an order denying the motion as premature because they contend that they cannot adequately
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`respond to the motion without further discovery. For the reasons below, the Court grants
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`Plaintiffs’ Rule 56(d) motion. DRL’s motion for summary judgment is denied.
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`I. BACKGROUND
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`This action relates to Plaintiffs’ product marketed under the brand name Vimovo, a
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`drug that is a combination of a nonsteroidal anti-inflammatory drug (naproxen) and a proton
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`Case 3:13-cv-00091-JAP-DEA Document 64 Filed 05/29/14 Page 2 of 5 PageID: 2868
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`pump inhibitor (esomeprazole magnesium). Vimovo is a prescription drug approved for use
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`to relieve the signs and symptoms of osteoarthritis, rheumatoid arthritis, and ankylosing
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`spondylitis, and to decrease the risk of gastric ulcers in patients at risk of developing such
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`ulcers from treatment with non-steroidal anti-inflammatory drugs (“NSAIDs”). Plaintiffs
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`allege that the proposed generic version of Vimovo tablets that DRL seeks to market infringes
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`claims 5, 15, 52, and 53 of U.S. Patent No. 6,926,907 (“the ‘907 patent”).1 As relevant here,
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`the ‘907 patent is directed to pharmaceutical compositions and methods of treating a patient
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`for pain or inflammation comprising orally administering compositions, “designed so that the
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`NSAID is not released until the intragastric pH has been raised to” 3.5 or higher. ‘907 patent,
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`col. 4, lines 18-53.
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`DRL has moved for summary judgment of non-infringement, asserting that its ANDA
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`product does not infringe the ‘907 patent either literally or under the doctrine of equivalents.
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`Plaintiffs have filed an opposition to the motion on the merits, however, they have also filed a
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`motion under Rule 56(d) alleging that they cannot adequately respond to DRL’s summary
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`judgment motion because further discovery is required.
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`II. ANALYSIS
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`A district court is “obliged to give a party opposing summary judgment an adequate
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`opportunity to obtain discovery.” Dowling v. City of Philadelphia, 855 F.2d 136, 139 (3d Cir.
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`1988). If a party opposing summary judgment “believes that s/he needs additional time for
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`discovery, Rule 56(d) specifies the procedure to be followed.” Pa., Dep't of Pub. Welfare v.
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`Sebelius, 674 F.3d 139, 157 (3d Cir. 2012) (quoting Dowling v. City of Philadelphia, 855 F.2d
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`136, 139 (3d Cir. 1988)). Pursuant to Rule 56(d), “[i]f a nonmovant shows by affidavit or
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`1 The asserted claims in this action depend from claim 1, either directly or indirectly.
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`2
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`Case 3:13-cv-00091-JAP-DEA Document 64 Filed 05/29/14 Page 3 of 5 PageID: 2869
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`declaration that, for specified reasons, it cannot present facts essential to justify its opposition,
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`the court may: (1) defer considering the motion or deny it; (2) allow time to obtain affidavits
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`or declarations or to take discovery; or (3) issue any other appropriate order.” Fed. R. Civ. P.
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`56(d).
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`A Rule 56(d) motion should “be accompanied by ‘a supporting affidavit detailing
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`what particular information is sought; how, if uncovered, it would preclude summary
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`judgment; and why it has not previously been obtained.” Superior Offshore Int'l, Inc. v.
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`Bristow Grp., 490 Fed.Appx. 492, 501 (3d Cir. 2012) (quoting Doe v. Abinton Friends Sch.,
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`480 F.3d 252, 255, n.3 (3d Cir. 2007). “However, because ‘[a] district court has discretion in
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`acting on Rule 56[d] motions,’ this list of factors is not exhaustive. Instead, it ‘simply offer[s]
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`a guide for the district court to follow in exercising its discretion under Rule 56[d].’” Id.
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`(quoting Horvath v. Keystone Health Plan E., Inc., 333 F.3d 450, 458 (3d Cir. 2003). “District
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`courts usually grant properly filed Rule [56(d)]2 motions as a matter of course. This is
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`particularly so when there are discovery requests outstanding or relevant facts are under the
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`control of the moving party.” Doe v. Abington Friends School, 480 F.3d 252, 257 (3d Cir.
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`2007). (internal quotation marks and citations omitted).
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`Here, Plaintiffs argue that further discovery is required before they can adequately
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`respond to DRL’s motion. They outline the specific discovery that they contend that is
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`required in the Declaration of Stephen Hash, which accompanies Plaintiffs motion. The Court
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`briefly summarizes their contentions below:
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`First, Plaintiff asserts that additional expert discovery is required. DRL relies on the
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`opinions of two experts, Dr. Cuitiño and Dr. Drennen, in support of its motion for summary
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`2 Rule 56(d) was formerly Rule 56(f), which originally appeared in this quotation.
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`judgment. Plaintiffs seek the opportunity to depose these experts. Plaintiffs also seek the
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`opportunity to engage their own experts to analyze the testing done by DRL’s experts and to
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`perform their own testing on DRL’s ANDA product.
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`Second, Plaintiffs seek to depose DRL to investigate DRL’s statements to the FDA
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`with respect to facts bearing on the specific infringement issues raised by way of DRL’s
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`summary judgment motion.
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`Finally, DRL contends that it needs time to review a large document production it
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`received shortly before the summary judgment motion was filed, as well as discovery (e.g.,
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`initial disclosures and answers to interrogatories) that had not yet, at the time of the filing of
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`the summary judgment motion, been produced.
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`The Court agrees with Plaintiffs that DRL’s motion is premature, and finds that
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`Plaintiffs have established an entitlement to relief under Rule 56(d). Further discovery is
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`required for Plaintiffs to adequately respond to DRL’s summary judgment motion. Most
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`notably, Plaintiffs should have an opportunity to take discovery relating to the expert reports
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`relied upon by DRL in support of its motion. The Court therefore will deny DRL’s motion
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`without prejudice. DRL may refile its motion, should it wish, after all appropriate discovery
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`has been taken and adequate time has been allowed for review and analysis of discovery
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`materials.
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`III. CONCLUSION
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`For the reasons above, Plaintiff’s motion under Rule 56(d) is granted. DRL’s motion
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`for summary judgment is denied without prejudice. An appropriate Order accompanies this
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` /s/ JOEL A. PISANO
`United States District Judge
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`Opinion.
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`Dated: May 29, 2014
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